Tuesday, August 21, 2018

TTAB Test: Is THE HALAL SHACK Merely Descriptive of Restaurant Services?

The USPTO refused registration of the mark THE HALAL SHACK  in standard character form, for "restaurant services" [HALAL disclaimed], finding the mark to be merely descriptive of the services. You may recall that, earlier this year, the BOARD found THE JOINT to be generic for "restaurant, bar and catering services." [TTABlogged here]. How do you think this appeal came out? In re The Halal Shack Inc., Serial No. 87633904 (August 17, 2018) [not precedential] (Opinion by Judge David K. Heasley).

The Board observed that “HALAL” describes the type of food featured in applicant’s restaurant: “Halal food and meats are sourced and prepared following Islamic dietary guidelines to ensure not only the highest quality but also the humane treatment of the animals they came from.” Therefore, the key question was the trademark significance of SHACK.

The examining attorney contended that SHACK merely describes the facility in which applicant’s restaurant services are provided, observing that restaurants offer their services in a wide variety of buildings, including a SHACK, defined as “a simple, small building.” He pointed to an Internet article referring to various SHACK-named restaurants and to registrations for names such as CRAZY CLAM SHACK (with CLAM SHACK disclaimed), THE POKE SHACK (on the Supplemental Register, with POKE disclaimed), and RAMEN SHACK (on the Supplemental Register, with RAMEN disclaimed).

Applicant argued that SHACK is merely suggestive, not descriptive, since restaurants do not literally provide services in "shacks," although a restaurant may choose to use a rustic décor that resembles the appearance of a "shack." Applicant pointed to eleven registrations in which SHACK was not disclaimed for restaurant services: e.g., BURGER SHACK, FRAPPE SHACK, and SALAD SHACK.

The Board, noting that there is a fine line between suggestiveness and mere descriptiveness, reasoned as follows:

[T]he term SHACK, as used in connection with Applicant’s restaurant services, appears at first blush to describe the sort of building in which the services are provided. But to articulate the way the term conveys information about the restaurant services, one must engage in a mental process involving imagination, thought and perception, realizing that the term is more figurative than literal, more connotative than denotative, conveying the commercial impression of informal ambiance.

The registration evidence demonstrated that SHACK is "not necessarily descriptive of restaurant services, and may, depending on the record, be found inherently distinctive."

Concluding that applicant's mark fall on the suggestive side of the line, the Board further observed that "the term SHACK, when coupled with HALAL, which describes food sourced and prepared following strict Islamic dietary guidelines, creates a degree of incongruity that carries the mark as a whole even further across the fine line dividing the merely descriptive from the suggestive."

The Board, noted, however, that the subject mark "appears to us to be highly suggestive and commercially weak, and thus easily distinguished from other composite marks by minor differences." Nonetheless, the Board found that THE HALAL SHACK is inherently distinctive, and therefore the Section 2(e)(1) refusal to register was reversed.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2018.


At 8:57 AM, Anonymous Ben Montgomery said...

If Shake Shack can get protection for the word mark "Shake Shack" in stylized font, why can't The Halal Shack?

At 9:21 AM, Anonymous Anonymous said...

Well that one certainly surprised me.

At 10:20 AM, Anonymous Anonymous said...

The Board got it right:

A mark comprising a combination of merely descriptive components is registrable if the combination of terms creates a unitary mark with a nondescriptive meaning, or if the composite has a bizarre or incongruous meaning as applied to the goods or services. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968); In re Shutts, 217 USPQ 363 (TTAB 1983).

At 1:41 PM, Anonymous Anonymous said...

I get about one of ten correct. I was wrong on this one too.

At 2:40 PM, Anonymous Anonymous said...

This should never have been an objection in the first place. No consumer would interpret this literally, and the suggestive ambiance connotation is more obvious than the descriptive literal meaning.

USPTO needs to amend TMEP to add provision explaining that EA's are allowed to think like human beings.


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